House Passes America Invents Act: What to Expect

On June 23, 2011, the House of Representatives overwhelmingly voted 304-117 to pass the America Invents Act to overhaul the U.S. patent system in hopes of encouraging innovation, job creation and economic growth.  The most notable changes that the America Invents Act proposes are:


* transition to a first-inventor-to-file system rather than the first-to-invent system that we have currently.

* fee setting authority and the ability for the Patent Office to keep all the fees it generates.

* creates a post-grant review system to weed out patents that should not have been granted.

* helps the Patent and Trademark Office address the backlog of patent applications.


The new first-inventor-to-file system will impose a sense of urgency on inventors to file a patent application in the U.S. Patent Office at the soonest possible date in order to establish a right to a patent against all subsequent filers for the same invention.  This can be accomplished by filing a provisional patent application which can be prepared and filed in less time than normally required to file a formal, non-provisional patent application.


Upon passage of the bill by the House of Representatives, David Kappos, Director of the U.S. Patent and Trademark Office, issued the following statement:


“The effort to reform our nation’s patent laws began a decade ago, and House passage today brings patent reform a significant step closer to becoming law. This bi-partisan legislation will transform our patent system, enhance our Nation’s competitiveness and promote economic growth and job creation. We are encouraged by the statements of so many Members of Congress calling for the USPTO to have full access to all of its fee collections. We are particularly thankful to Chairman Rogers for his commitment to ensure that the USPTO has full access to its fees when fee collections exceed Congress’ annual appropriation for USPTO. Full funding of the USPTO is necessary for the USPTO to successfully implement this legislation and to more effectively perform its core mission.  We are hopeful that this critical legislation can move expeditiously toward final passage and enactment.”


The key difference between the bill that the House of Representatives passed and the version that the Senate passed is funding for the United States Patent and Trademark Office.  Due to this, the bill will now go back to the Senate to see if they will adopt the House of Representatives version.


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